CONFLICT BETWEEN

GEOGRAPHICAL INDICATION AND TRADEMARK PROTECTIONS

UNDER THE TRIPS AGREEMENT AND VIETNAM LAWS
Thi Thu Ha LE 12

Introduction. Trademarks and geographical indications are commercial indications to

distinguish and identify the source of products or services. Trademark helps consumers
recognize manufacturing enterprises in the market. Referring to the geographical
indication, consumer knows that a product comes from a particular area and possesses
certain characteristics that are essentially attributable to that origin 3. In fact, certain
geographical indications are registered as trademarks and vice versa, some trademarks
consist of geographical indications. This leads to a conflict of rights between
geographical indications and trademarks protections. Trademarks and geographical
indications conflict resolution processes vary from one country to another as different
geographical indications protection regulations apply.
The introduction of the TRIPs (The Agreement on Trade-related Aspects of Intellectual
Property Rights) in 1994 in the framework of the WTO marks a new step on
geographical indications protection on a world scale. It is the most comprehensive
multilateral agreement4 on intellectual property in which geographical indication and
trademark are considered as two independent objects, and this is the first time a
resolution to this problem is proposed.
Plan. This paper will explore the potential conflict between trademark and
geographical indication protections (I) and the conflict resolution modalities under the
TRIPS agreement and under the laws of Vietnam (II).
I. The potential conflict between trademark and geographical indication
protections
Division. Potential conflicts in the protection of trademarks and geographical
indications are presented (2) and based on the analysis of the protection regime for
these two objects of intellectual property (1).

Ph.D, Lecturer in Intellectual Property and Brand, Foreign Trade University, Vietnam
Book chapter in EU ASEAN Partenariat, FEDUCI, Sweet & Maxwell Publisher, 2013. Suggested Citation :
Le, Thi Thu Ha, Conflict between geographical indication and trademark protection under the TRIPS Agreement
and Vietnam laws, in EU ASEAN Partenariat, FEDUCI, Sweet & Maxwell Publisher, 2013
3
Refer to: http://www.wipo.int/about-ip/fr/geographical_ind.htm
4
Refer to: http://www.wto.org/french/tratop_f/trips_f/intel2_f.htm
2

1-The protection of Trademarks and Geographical indications

Presentation. The terms Trademark (A) and Geographical indication (B) are legally
defined under the provisions of the TRIPS.
A. Trademark
Definition. The trademark is one of the intellectual property rights objects mentioned
by many international conventions on industrial property. However, the TRIPs
agreement was the first to specifically define the concept of trademark 5 as follows:
Any sign, or any combination of signs, capable of distinguishing the goods or
services of one undertaking from those of other undertakings, shall be capable
of constituting a trademark... Where signs are not inherently capable of
distinguishing the relevant goods or services, Members may make
registrability depend on distinctiveness acquired through use. 6
According to this provision, a trademark is used to distinguish goods and services of a
business from those of its competitors. Any sign (names, letters, figures, images,
colours and special factors like sound, smell, gestures... 7) or any combination of these
signs, capable of distinguishing, can be registered as trademark. This is an important
condition, which reflects the main function of trademarks: distinctiveness8. This is an
important condition, and reflects the main function of trademarks which is
distinctiveness. In fact, trademarks guarantee the commercial origin of goods and
services rather than they ensure their quality. Distinctiveness can identify the products
or services of a company and retain customers loyalty9. The holder of a trademark has
5

The Paris Convention for the Protection of industrial property of 1883 and the Madrid Protocol of 1891 setting
up a system for the international registration of trademarks.
6
TRIPs, Article 15.1a.
7
Article 15 of the TRIPs agreement also openly provides that Members may require, as a condition of
registration, that signs be visually perceptible. In fact, such jurisdictions as the United States and the EU allow
the registration as trademarks of special signs like signs of flavor or sounds (Trademark Application Serial No.
74/485,223 for Harrison motorcycle, NBC trademark, Microsoft, etc.), or scent (the scent of Plumeria flowers
for sewing and embroidery-TTAB, the smell of freshly-cut grass for tennis balls (R 156/ 1998 2). Source:
WIPO, Handbook of Intellectual Property, 2003. However, some countries such as Vietnam or Japan confine
signs which can be registered as trademarks to only visible ones. US and EU nations allow the registration of
such invisible trademarks as sounds.
8
The TRIPs agreement does not define the criteria of distinctiveness but we can see that distinctiveness is
understood relatively consistently as not misleading, non-descriptive nor deceptive.
The descriptive signs are often purely ones used to indicate the type, origin, duration and purpose of use or any
characteristics of goods, therefore, they can be used for any type of goods and services and no type can be
registered exclusively to avoid confusion for consumers.
9
Actually, trademarks function is far beyond a simple reference to the origin of product and service, but are also
meaningful for quality, emotion, image and even culture, such as Louis Vuitton, Chanel, Coca Cola, Apple,
Hennesy See : OConnor B., The law of geographical Indication, 2004, Cameron May, p108.
2

the exclusive right to use, to exploit and prevent others from using it without its
permission10.
Signs indicating geographical origins. Signs that are used to designate the
geographical origin, such as names, symbols, emblems, are generally descriptive and
therefore they are often excluded from trademark protection. In addition to the
principle of the exclusive right granted to the trademarks holder and to avoid that an
exclusive right of a collective sign is allocated to an individual or a certain company,
the TRIPs Agreement and local legislation prohibit registration of a trademark that is
deceptive or likely to mislead the public to avoid confusion for consumers 11, for
example, signs indicating geographical origins12. However, exceptions to trademark
protection in article 15.1.b of the TRIPs Agreement specify cases in which signs which
though themselves are not inherently capable of distinguishing relevant goods or
services, can still benefit from registrability if they acquire distinctiveness through
use13. According to this provision, signs indicating geographical origins which are
inherently considered to have a descriptive nature can still be registered as
trademarks if they reach distinctiveness or the second meaning through use 14.
Principles of registration. Exception of distinctiveness reflects the combination of
two principles for acquiring the trademarks right. Trademark protection is established
on the basis of first to file, which means giving priority to the first applicant for
protection. However, there are still a few countries such as the USA which apply the
principle of first to use, which means giving priority to the first user. However, the
TRIPs accepts the distinctiveness acquired by use of the trademark, i.e. the one who
proves that he was the first to use the trademark gains priority.

10

TRIPs, art. 16.1.

Gever F., Geographical name and signs used as tradermark, 8EIPR, 1990, p285.
12
The court of Australia refused to protect the sign Michigan as a trademark of earthmoving equipment. A
number of similar decisions were made by the courts in the UK such as the sign Glastonbury for Whisky,
Canada for maltless beverage, Green Moutain for grapes or Montserrat for lime. In Switzerland, there are
similar decisions: Alaska for beverages, in particular mineral water, and Cusco for sweets (in particular
chocolate). In Russia, a trademark Sir Kent for tea was not registered because it could confuse and mislead
the consumer concerning the true origin of the product. See OConnor Bernard (2003), p111.
13
Plusieurs jurisprudences sont cites, telles que CAMEL HAIR BELTING (Reddaway vs Banham),
ABERCROMBIE pour des vt em ents, IMAGESTREAM pour des logiciels dordinateur, LASTING
PERFORMANCE pour du savon; MAXIMA pour de l'quipement mdical, NETMEETING pour des
programmes de communications en rseau des ordinateurs (cits par Blakeney M. dans Proposal for the
International Regulation of Geographical Indication", 2001).
14
In fact, many signs containing geographical origins have been registered as trademarks. Some indicate
correctly the geographical origins of their product such as "Swiss-Alp" for Swiss chocolate, France-Caline for
a French perfume, "Navarra" for Spanish liqueur. But some are made up or do not indicate the real origin of
products, for example, Dutch trademarks Etna for chimneys and Malta Heineken for beer, London Dock
for tobacco and articles for smokers in Amsterdam, Yellow River for French flowers, River Neva for
German spirits, Black sea for alcoholic drinks in Brussels, Kent for conserves produced in Benelux,
Bosford Dry London Gin for Italian sweet liqueurs. See OConnor, p111.
11

Duration of protection. The trademark registration gives the holder of the trademark
an exclusive right to exploit and use the trademark for at least seven years under TRIPs
agreement and which is indefinitely renewable15.
B- Geographical indications
Definition. The definition of geographical indication has been internationally accepted
by the countries member of the TRIPs Agreement:
Geographical indications are, for the purposes of this Agreement, indications
which identify a good as originating in the territory of a Member, or a region or
locality in that territory, where a given quality, reputation or other
characteristic of the good is essentially attributable to its geographical origin. 16
Two important elements are inferred from the above definition: indications identify
geographical origins of the goods and The goods have quality, reputation or
other characteristics essentially attributed by its geographical origin.
Indications identify geographical origins of the goods
If Trademarks can be any signs while geographical indications must be indications: not
only direct indications like geographical names but also symbols or emblems
visually evoking the place of origin of the product.
Geographical name. This is the most common sign providing direct information
about the geographical origins of goods. Indications can be the name of a country
("Columbia", "Thais", "Swiss made", "Australia wine"), a territory or just a city, a
region ("Cognac", "Bordeaux"), even the name of a bridge ("London Bridge"), a
mountain ("Matterhorn"), a valley, an island ("Phu Quoc", "Murano") or any place that
can become geographical indications. There is no requirement for indication as a
geographical name17. In addition, the TRIPs agreement allows one name which is
not a geographical name to be used for geographical indications. Thus, even
though India does not have any geographical name called "Basmati", people still
know it is an indication for rice from India. Besides, some names are not direct
geographical ones but have become geographical indications through a longstanding usage by the locals such as "Alphonso" mangoes grown in Maharashtra
15

TRIPs, art 18.

TRIPs, art 22.1.
17
Rangnekar, Dwijen (2003), Geographique Indications A Review of Proposals at the TRIPs Council:
Extending Article 23 to Products other than Wines and Spirits. Complete document available on:
http://www.ictsd.org/iprsonline/unctadictsd/docs/rangnekar_may2003_final.pdf, p. 22.
16

state, India, "Feta" cheese from Greece or "Khadi" hand-made fabrics from South
India. 18
Iconic symbol, Images. The TRIPs agreement allows geographical indications by
iconic symbols or images having a connection with certain locations, as the Eiffel
Tower for goods produced in France, the Pyramids for Egypt goods or the Statue of
Liberty for Americas goods, which can be used to indicate goods origin. In some
cases, the image of an individual can also help associate product origins. For example,
the image of the Cuban leader Che Guevara is commonly used for cigarette products
originating from Cuba.
From a marketing standpoint, beside names, image signs are relatively useful
information when product images are promoted. Such really well-known images and
symbols as the French Eiffel Tower, the Swiss Matterhorn mountain, London Tower in
the UK help consumers associate quickly with a certain geographical area. However,
image information may also causes consumers to associate differently. For instance, is
the Eiffel Tower image the symbol of Paris or of France in general? Is the London
Tower image the symbol of London or of the whole UK? Thus, image signs should
only be the information accompanying geographical names, help improve protection
ability as well as better implement the function of geographical indications. The use of
merely image and symbol signs in some cases will cause confusion for consumers 19.
Goods must have the quality, reputation or other characteristics brought
by geographical origins. 20
The link between products and geographical area. This link differenciates
geographical indications from previous relating concepts as Appellations of origin and
Indications of source21. Geographical indications show not only the goods place of
origin but also their quality, reputation or distinctive charaters due to geographical
18

Latha R. Nair & Rajendra Kumar, Geographical Indications: a search for identity, 2005, LexisNexis
Butterworths, p95.
19
L Thi Thu Ha, Protection des Indications gographiques du Vietnam dans le contexte dintgration
conomique internationale , La maison dEdition dInformation et de Communication, 2011, p15.
20
The TRIPs Agreement does not explain specifically each of these terms. In reality, there has never been any
decision of the WTO regarding the scope of protection of geographical indications.
21
Indications of source are mentioned as objects of industrial property in article 1.2 of The Paris Convention
1883. Indications of source connects the product to a specific region, and does not require additional conditions
such as quality or special characteristics.
The concept of Appellations of origin is quoted in the Madrid Agreement 1891, and then defined in the Lisbon
Arrangement 1958. According to the latter, an Appellation of origin is the geographical name of a country, a
region or a town/village and is used to indicate a product which originates from it and the quality and
characteristics of which are exclusively or mainly due to the geographical environment, including the natural and
human factors. Whereas this link is essential and the whole production process must be carried out in the
relevant geographical area, this link is weaker for the geographical indication.
5

environment, including natural factors (climatic, hydrological, geological, ecological

and other natural conditions) and human factors (skills, know-how of the producers,
and traditional manufacturing processes). However, just one characteristics, among the
quality, reputation or distinctive factors, is enough. Reputation is an additional element
of the two following qualifiers: quality and special characteristic. Therefore,
geographical indications can be used for goods the reputation of which is based on
local initiatives22 like for handicraft goods or industrial goods23. "Sheffield", "Swiss
watches" and "Swiss knives" are geographical indications used for industrial
products.24.
Potential development of geographical indications. The concept of geographical
indications under the TRIPs agreement has overcome the limitations set out by
previous international conventions and opened greater opportunities for the protection
of geographical indications. This is based on the three following points:
First, signs protected as geographical indications are broader than appellations of
origin. While appellations of origin are merely direct names indicating geographical
places, geographical indications may be indirect signs, such as images, symbols.
Second, the requirement for the link between product quality and the geographical
origin for geographical indications is lighter than the one requested for appellation of
origin. The strict regulations on appellations of origin under the Lisbon agreement are
difficult to apply to non-agricultural products, therefore, regulations on geographical
indications under the TRIPs agreement are strongly supported by developed and
developing countries. 25
Third, in the concept of geographical indications, an additional factor named
reputation of goods appears alongside factors named quality or other
characteristics, however, indications having one among the three above factors can be
considered geographical indications. If goods having reputation but no specific quality
brought by geographical origin are not protected by an appellation of origin, they can
be protected by a geographical indication. This is the basic difference between
geographical indications and appellations of origin. This regulation opens
opportunities for the protection of non-agricultural products which developing and less
developed countries aim at26.
22

The need for a strict link between the quality of the products and the geographical origin of the appellations of
origin is excluded for non-agricultural products.
23
Maskus, Keith E. (2003), Observations on the Development Potential of Geographical Indications., 2003.
24
Quoted by Latha R. Nair & Rajendra Kumar op.cit., p99.
25
Rangnekar, Dwijen (2003), op.cit.
26
Thailand has allowed the registration of geographical indications protection for handicrafts or industrial
products such as Aranyik for knives, Benjarong for five-color chinaware, Borsarng for umbrellas,
6

Methods of protection The TRIPs Agreement does not provide for any specific
regulation on the method for geographical indications protection. In fact, each country
protects geographical indications in its own way27. Three legal systems in three groups
of countries are recorded with regards to this matters. Certain countries in the
European Union which have a long tradition of geographical indications protection
(Spain, France, Italy and Portugal) often have their own law on geographical
indications protection (called sui generis). Countries such as the United States,
Canada, New Zealand protect geographical indications through an existing system of
collective trademarks and certification trademarks. In addition, geographical
indications are also protected under business law and competition law. The difference
in the methods of geographical indications protection, especially from the standpoint
of the EU and the USA has led to conflicts between the protection mechanisms of
these two subjects (trademarks and geographical indications).
2-Conflict between trademark and geographical indication protections
Presentation. As widely used commercial indications, trademarks or geographical
indications provide consumers with information on the origin of products, distinguish
the different products or services available on the market. Besides similarities, there
are also a number of differences. The comparison between trademarks and
geographical indications (A) is necessary to determine the potential conflicts between
trademarks and geographical indications (B).
A. Distinguishing between Trademark and Geographical indication
Component elements. The first difference lies in the distinctive signs constituting
trademarks and geographical indications. While trademarks can be made up of nondescriptive signs which are capable of distinguishing, geographical indications are
often direct or indirect indications describing the origin of goods. Thus, names
indicating geographical origin are often excluded from protected signs.
Owners. Trademarks identify goods and services of a certain business from those of
its competitors. Geographical indications identify products from a specific
geographical area. Only products manufactured in a certain geographical area,
satisfying requirements for quality, reputation or having main characteristics due to
"Chantaburi" for sapphire, Sukhotai for gold. See OConnor B., p307.
27
Sabrina Lucatelli, "Appellation dorigine et Indication gographiques dans les pays membre de lOECD :
Implications conomiques et juridiques", 2000. Document complet disponible sur : http://www.lib.ox.ac.uk/olis/
7

such geographical origin can bear geographical indications. Therefore, the trademark
owner is a moral or legal entity, while geographical indications are not property of a
specific business but everyone located in the certain geographical area meeting the set
forth requirements have the right to use such geographical indications. That means that
geographical indications belong to collective ownership, limited to a certain number of
manufacturers in the area. Thus, from an economic standpoint, geographical
indications can still be considered as a form of collective monopoly, which legally
eliminates competition from manufacturers located outside this geographical area28.
Transfer of rights. The trademark owner has the exclusive right to use and to transfer
it. Geographical indications are a collective property so they cannot be transferred.
Protection duration: Protection duration for trademarks is for 7 years but it can be
extended many times. Geographical indications are protected so long as protection
standards meet the requirements.
B. Conflicts between trademarks and geographical indications
Presentation. The difference between the legal systems of (i) geographical indications
protection and (ii) the possibility of registering signs indicating the geographical origin
as a trademark or geographical indication led to potential conflicts of rights and
interests, especially in respect of the existence of a specific link between product
characteristics and geographical origin29.
Conflict of interest. Trademark owners have the right to use and to prevent others
from using without permission such trademarks whereas the right to use geographical
indications belongs to all product manufacturers located in that geographical area. So
who has the right to use signs providing geographical indications, trademark owners or
geographical indications owners? This will affect the competitiveness of products
issued from the relevant geographical area on the market and above all, the quality of
the products issued from the relevant geographical area.

28

Investigation findings of the EU Competition commission about five associations of geographical indications
manufacturers sued for the abuse of monopoly position on the market as Parma ham, French Red Label,
Gorgonzola cheese, Parma and San Daniele, Parmigiano Reggiano and Grana Padano cheese. See OECD,
"Appellations dOrigine et Indications gographiques dans les pays membres de lOECD : implications
conomiques et juridiques", 2000.
29
There is no conflict when the product benefiting from the trademark consisting of a sign providing a
geographical indication does not bear the quality, reputation or the characteristics resulting from the relevant
geographical area, e.g. the Trng Sn trademark for the pen produced by the Hongha company and the
Mont Blanc pen trademark.
8

Legal conflict. Conflicts result from the exclusivity character of trademarks and the
collective character of geographical indications. Conflicts result from the coexistence
of these two objects. Unless specific restrictions, in both cases (a trademark registered
or recognized through use and a posterior geographical indication or geographical
indication registered as a trademark later), trademarks and geographical indications
will coexist.
II. Conflict resolution between geographical indications and trademarks
Division. Conflict resolution between geographical indications and trademarks is an
important issue in international negotiations on intellectual property. We will see how
to solve this issue under international law (1) and national legislation (2).
1. Under the TRIPs agreement
Principle. The TRIPS Agreement provides for a framework for the implementation of
IPR protection at national level. It provides that geographical indications and
trademarks are two subjects of intellectual property rights that should be protected
equally. Therefore, the relation between trademarks and geographical indications is to
be found in the respective regulations applying to these two subjects.
Under trademark regulations. Under the trademark protection regulations, the
following principle has been developed: exclusive rights of a trademark registered
previously in a good faith.
The owner of a registered trademark shall have the exclusive right to prevent
all third parties not having the owners consent from using in the course of
trade identical or similar signs for goods or services which are identical or
similar to those in respect of which the trademark is registered where such use
would result in a likelihood of confusion 30.
According to this provision, the trademark owners have the exclusive rights to prevent
the use of identical or similar signs for identical or similar goods, so as to avoid
confusion for the public. In other words, a trademark can contain a geographical
indication if the use of this indication in the trademark does not mislead the public in
respect of the true place of origin. Accordingly, the "Bordeaux" trademark, registered
by an American company for biscuits, is not invalidated in the United States and
Canada because such trademark does not wrongly represent to the public that these
30

The TRIPS agreement Article 16.1.

9

cookies are from Bordeaux, a region of France. The same decision is given in the case
of the "Touraine" for tea, coffee products. 31
Under geographical indications regulations. In this section, the TRIPs Agreement
provides that the registration of a trademark containing a geographical indication shall
be refused or invalidated, in order to prevent the use of misleading indications in
respect of the origin of goods:
Each member shall () refuse or invalidate the registration of a trademark
which contains or consists of a geographical indication with respect to goods
not originating in the territory indicated, if use of the indication in the
trademark for such goods in that members country is of such a nature as to
mislead the public as to the true place of origin. 32
For wines and spirits, a trademark containing a geographical indication is prohibited
even if its use does not directly mislead the public:
The registration of a trademark for wines which contains or consists of a
geographical indication identifying wines or for spirits which contains or
consists of a geographical indication identifying spirits shall be refused or
invalidated, [] with respect to such wines or spirits not having this origin 33.
This means that a trademark will be refused protection if it contains the components of
a geographical indication.
Exceptions. The TRIPS Agreement provides for the following exception:
"Where a trademark has been applied for or registered in good faith, or where
rights to a trademark have been acquired through use in good faith either:
- before the date of application of these provisions in that Member as
defined in Part VI; or
- before the geographical indication is protected in its country of origin;

31

National Institute des Appellations dorigine vs Pepperidge Farm Inc., and Institut National des Appellations
dorigine vs Chock Full ONuts Corp, quoted by Daniel R. Bereskin in Legal protection of geographical
indications
in
Canada,
complete
document
available
on:
http://www.bereskinparr.com/French/publications/pdf/TM-Geographic-Bereskin.pdf
32
TRIPs, Art. 22.3.
33
TRIPs, Art. 23.2.
10

measures adopted to implement the protection of geographical indication shall

not prejudice eligibility for or the validity of the registration of a trademark, or
the right to use a trademark, on the basis that such a trademark is identical
with, or similar to, a geographical indication "34.
This provision gives an opportunity for the protection of a geographical indication
identical or similar to the one applying to a prior trademark. This exception leads to
different interpretations in local jurisdictions according to their respective views on the
matter.
Countries favoring the protection of trademarks. For countries having a system of
geographical indication protection incorporated into their existing laws on trademarks
(certification trademarks and collective trademarks), unfair competition and consumer
protection, such as the United States, Canada or Australia, the registration of a
geographical indication identical or similar to an earlier registered trademark for an
identical or similar product will be rejected to avoid confusion. This means that the
principle of exclusive rights of a trademark registered previously in a good faith is
applied and that it is impossible to register a geographical indication as a trademark. In
this case, the protection of a geographical name can be made by the registration of
certification marks, provided that the use of this indication is fair and that such
exceptions take into account the legitimate interests of the trademark owner and of
third parties35. This is the case of "Bordeaux" for wine and "Roquefort" for cheese
(France), "Rioja" for wine (Spain), "Madre" for wine (Portugal) 36. However, the
protection is impossible if the relevant name is considered generic37.
Priority over geographical indications protection. For European countries who
favor the appellation of origin and geographical indication, it is not possible to register
a trademark containing a geographical indication or which consists of such an
indication, if this indication is already registered. The exception to Article 24.5 of
TRIPs Agreement is only applied for the registration of a geographical indication. If a
trademark has been filed or registered in good faith, this provision allows the
coexistence of a geographical indication similar or identical to the trademark in
question. The application of a geographical indication will be rejected if a similar or

34

TRIPs, Art. 24.5.

Grevers F., Topical issues of the protection of geographical indication, 1999.
36
Refer to: http://www.uspto.gov
37
Refer to: Wineworths Group Ltd vs Comite Interprofessionnel du vin de Champagne (1992), Consorzio del
Prosciutto di Parma vs Maple Leaf Meats Inc (2001).
35

11

identical trademark was early registered and well known38, and that the use of the
geographical indication could induce the public in error as to the origin of products39.
Co-existence of trademark and geographical indication. Unlike the United States
and Australia, exclusive rights of a trademark registered previously in a good faith

is not the rule governing the protection of geographical indications in the

European Union. The European Union countries confirm that Article 24.5 of the
TRIPs Agreement on the exception of geographical indications protection over
trademarks allows the coexistence of an early registered trademark and a similar or
identical geographical indication protected later. A registered trademark can only
prevent a geographical indication to be registered later if a trademark has been used
and has achieved a certain prestige40. If the trademark has not acquired any reputation,
the geographical indication is still accepted for registration, which leads to the
coexistence of trademarks and geographical indications. This means that a preregistered trademark still will be used but it loses its monopoly when a geographical
indication identical or similar to a product trademark is protected 41. Thus, the European
Union applies the principle of the coexistence of a pre-registered trademark and a
geographical indication similar or identical to the trademark protected later. In fact,
this standpoint has been applied in some decisions of the European Commission in
cases related to [the interaction of] geographical indications and trademarks42.
Controversy. The United States, Australia and New Zealand believe that the European
Union interpretation is inconsistent with the principle of exclusive trademarks set out
in Article 16.1 of the TRIPS Agreement. When the two subjects coexist, trademarks
owners have no rights to prevent others from using geographical indications even
though geographical indications are identical to their own trademarks. This above
disagreement has led to a dispute before the World Trade Organisation (WTO)
between the United States, Australia and New Zealand (the plaintiff) and the European
Union (the defendant). The dispute was considered for more than one year by the
WTO and on March 15, 2005, the WTO acknowledged that the Regulation of the
European Union did not infringe WTO provisions 43. The Regulation [of the European
38

For instance "Tabasco", which is the name of a province in Mexico but which is also registered as a trademark
for a gravy product.
39
Council Regulation (EC) No 510/2006 on the protection of Geographical Indications and Designations of
Origin for Agricultural products and Foodstuffs, Article 14.
40
For instance, Tabasco, a province name in Mexico is registered as the trademark of a sauce product.
41
Regulation No 510/2006 of the European Union Article 14.
42
For example, a recent EU decision allows the coexistence of the trademark "Gerry" registered for bottled water
and similar geographical indication "Kerry" for mineral water (Gerolsteiner Brunnen GmbH and Co. v Putsch
GmbH, Case C-100/0, 2004); or geographical indication "Bayerisches Bier" is also registered for not causing
confusion with trademark "Bavarian beer" registered earlier.
43
Decision No WT/DS/174/R, available at the following link:
http://www.uspto.gov/web/offices/dcom/olia/globalip/pdf/case_summary.pdf
12

Union] allows the coexistence of trademarks and geographical indications only if the
risk of confusion between trademark and geographical indications is not highly likely.
Article 17 of TRIPs Agreement allows Members to provide for limited exceptions to
the rights conferred by a trademark. Geographical indications will be refused or
invalided if they are identical or likely to cause confusion with trademarks registered
earlier.
Conclusion. Thus, although the TRIPS Agreement is the first multilateral agreement
setting out the relationship between the trademarks and the geographical indications
protections, it has not solved thoroughly this relationship. Conclusion No.
WT/DS174/R of the WTO still does not solve the disagreement between two different
viewpoints on this relationship fore born by the United States and European Union.
Despite of the WTOs decision on the matter, each group of countries still explains this
exception according to their own argument.
B. Under Vietnams legislation
Observations. Becoming the 150th member of the WTO means that Vietnam has to
modify its legal system for it to be consistent with the commitments set out in the
TRIPS Agreement. Vietnams Law on Intellectual Property 2005 44 was built right at the
time when the controversy among these countries was at its most stressful stage,
therefore it drew the attention of the above relevant countries. In this context,
Vietnams regulations on this issue had to be considered in order to ensure that the two
basic principles, that is (i) to protect national interests and (ii) to comply with
international treaties45, are complied with. This is a big challenge for Vietnamese law
makers.
Principle of protecting national interests and the community. Vietnamese
geographical indications are considered national assets which must be protected under
the mechanism of geographical indication protection, and privatization is not allowed.
The form of protection of geographical indications is freely chosen by their owners or
by the said countries, either as geographical indications, or as collective trademarks or
certification marks.
Principle of integration. Vietnam does not have a long history of legislation on
geographical indications protection like Western countries have. Therefore, in the face
44

The English version of the Vietnamese intellectual property law is available at:
http://www.wipo.int/wipolex/en/details.jsp?id=5005.
45
Tran Viet Hung, Report on Geographical indications and Trademarks, Conference entitled Geographical
indications, the road to access the market, Hanoi, 2003.
13

of opposite viewpoints on the protection of trademarks and geographical indications,

regulations brought forward by Vietnam ensure the principle of harmonizing
international relations and do not cause disputes with any partner.
Resolutions. The legal basis of conflict resolution is considered in two cases: the
ability to register trademarks containing signs indicating origins (1) and the solution
of the relation between a pre-registered trademark and a later application of
geographical indication registration (2).
(1) Trademarks applied for protection contain signs indicating origins
Division. The ability to register as trademark signs indicating geographical origin is
considered in two cases: existence and absence of previously registered geographical
indications.
In case of absence of previously registered geographical indications
Principe. Signs indicating geographical origins are excluded from registration as
trademarks46, due to lack of distinctiveness47.
Exceptions. However, there still exist a few exceptions which permit the registration
of signs indicating geographical origins as trademarks if such signs have been used
and widely recognized as trademark or signs registered as collective trademarks or
certification trademarks 48.
As a trademark. Where signs indicating geographical origins have been used and
widely recognized as trademarks49, this means that these signs have achieved the
distinctiveness through the use as trademarks, and therefore they can be protected.
This is also consistent with the exception in Article 15.1 of the TRIPs Agreement
which allows:
where signs are not inherently capable of distinguishing the relevant goods
or services, Members may make registrability depend on distinctiveness
acquired through use.

46

Intellectual Property Law, art 73.5 et 74.2.c.

Trademark protection in Vietnam is not acknowledged to a lot of signs, such as Berlina for food products
such as sausages, ham, pt, Java for computer software and associated equipment, American snack for jam,
sweets
48
LPI, art 74.2.e.
49
LPI, art 74.2.a.
47

14

Some trademarks containing signs indicating geographical origins still exist in

Vietnam, such as "Sai Gon" beer, "Hanoi" beer, "Da Lat" wine, "Ben Tre" Cocotier
These trademarks had been registered before the promulgation of Law on Intellectual
Property 2005. The exclusive use of collective name by a person (legal or physical)
has caused many disputes50. Since 2005, trademark registration applications for
products bearing geographical names have been refused to prevent those indications of
origin from becoming private properties, especially in the case of a link between
product characteristics and geographical origin.
As a collective mark. Signs indicating geographical origins shall be capable of
registration as collective trademarks. Collective trademarks offer to consumers the
guarantee of products having certain characteristics (quality, nature or origin). The
registration of collective trademarks must be based on regulations defining the
conditions to use trademarks51.
To avoid cases abuse of collective trademarks containing geographical elements and
an exclusive use of region name by an individual or enterprise, others relevant
conditions will be examined. First, the right to register collective trademarks only
belongs to organizations and individuals operating production and business in that
locality52, then the right to use collective trademarks is not transferred to organizations
and individuals who are not to be found in those collective trademarks owners53.
A number of signs identifying the geographical origin in Vietnam are registered as
collective marks.54 Collective trademarks can be considered right options to protect
specific products of the locality and also a temporary solution for potential products
registered as geographical indications but for which the locality does not have enough
financial and technical competence to perform that registration55.
As certification mark. Signs indicating geographical origins shall be capable of
registration as certification trademarks. A certification trademark indicates that the
products for which it is used have achieved certain standards (quality, nature or
50

Refer to the dispute between the Vang lt (Dalat wine) trademark and the Vang lt (Dalat red
wine) trademark.
51
Art
37.6
of
01/2007/TT-BKHCN
decree,
the
English
version
is
available
at:
http://www.wipo.int/wipolex/en/details.jsp?id=5013.
52
Intellectual Property Law, Article 87.3.
53
Intellectual Property Law, Article 142.2.
54
Since the Law on Intellectual Property came into effect, there have been 46 signs indicating place names and
registered as collective trademarks (out of 85 applications) and which are granted protection. Source: National
Office of Intellectual Property of Vietnam, data updated on October 2011.
55
Where collective trademarks are registered for protection, if the locality continues to register geographical
indications, such collective trademarks overlapping such geographical indications will be cancelled. For
example, "Thanh Ha" litchi, "Hung Yen" longan and "Vinh" orange.
15

origin). In the case of certification of origin, it implies the existence of a specific link
between product characteristics and geographical origin, and the registration of
collective trademarks is subject to public authoritys permission for the use of
geographical name56. The owner of the trademark which does not market the product
and has a control function over the characteristics established by the regulations for
use. From this function standpoint, the certification mark is the closest to the
geographical indication57.
In case of an existing protected geographical indication
Division. If a geographical indication exist and is protected, the possibility to register a
sign containing the same geographical element as a trademark depends on the
assessment of whether such signs are identical or similar to the protected geographical
indication.
Identical or similar signs. If a trademark contains signs which are identical or similar
to a protected geographical indication, it will not be considered as distinctive and [it
will be considered?] that the use of such sign makes consumers misunderstand the
geographical origins of the relevant good or service58. The above is provided by
Vietnams Law on Intellectual Property:
Signs identical with or confusingly similar to protected geographical
indications if the use of such signs is likely to cause misconceptions to
consumers about the geographical origins of goods (Art 74.2.l);
And
Signs identical with a geographical indication or consist of a
geographical indication or being translated or transliterated from a
protected geographical indication for wines or spirits, if such signs shall
be registered for wines or spirits not originating from the place indicated
by that geographical indication (Art 74.2.m);

56

Art 37.7 01/2007/TT-BKHCN decree.

Among the certification trademarks which have been registered, some certify the origin of the product and
service: Bavi for milk, Lapthach for fish, Binhthuan for dragonfruits, Donduong for pineapple,
"Dalat"
for
vegetables...
Please
see
the
complete
list
at
http://noip.gov.vn/noip/RESOURCE.NSF/vwResourceList/1644A67C8D33914A4725785C000E763B/
$FILE/NhanCN.pdf.
58
Intellectual Property Law, Article 42.2.l.
57

16

The last one is a special provision for an enhanced protection for wines or strong
liquors in Law on Intellectual Property compared to previous regulations in the Civil
Code. This additional protection is independent of any actual deceit or unfair
competition act. In general, the use of geographical indications is prohibited if there is
a public deceit. The use of geographical indications for wines or spirits not originating
from the place indicated will be refused without whether those signs can confuse
consumers or not being taken into consideration. Even where the true origin of the
goods is indicated or the geographical indication is used in translation or accompanied
by expressions such as "kind", "type", "style", "imitation" or the like, such use may be
prohibited. This is consistent with the purpose of the TRIPs Agreement to set a higher
level of protection for wine and spirits.
Evaluation. Relating to the determination of the possibility to mislead consumers, the
signs "similar or identical" are likely to cause confusion with a protected geographical
indication if such signs are subject to registration of trademark for identical or similar
products or services. The signs are considered identical or similar to a geographical
indication if they are similar in terms of words, including pronunciation, phonetic
transcription of letters, symbols or iconic emblems protected as geographical
indications. 59

2- Later registered trademarks and geographical indications

Principe. When a trademark has been registered, an application for the protection of a
related geographical indication may be considered. The application is refused if such
geographical indication is identical or similar to a trademark previously registered and
such use of that geographical indication would cause confusion about the origin of the
product. 60
Co-existence. A geographical indication identical or similar to a trademark previously
registered can co-exist with such trademark if such trademark has been registered for
true protection before the date when the application for the geographical indication has
been made in good faith. However, Vietnams Law on Intellectual Property has not
provided for the possibility of registering as geographical indications signs similar or
identical to a trademark for unidentical or unsimilar products or services. Disputes

will be decided upon on a case by case basis.

59
60

01/2007/TT-KHCN decree, art 39.12.ii.

Intellectual Property Law, Article 80.3.
17

Conclusion. the principle of consumer protection and harmonization of the interests

of trademark and geographical indication holders is always set out in the regulations
relating to the resolution of the conflicts between two subjects. (See summary in
Annex 1). The element of good faith in the registration and the risk of confusion are
always taken into consideration. The resolution also ensure the application of the
initially proposed principles of (i) national asset protection and of (ii) integration.
From the viewpoint of regarding geographical indications as national assets, the
protection of national assets is implemented through the stipulation of conditions
aiming at strictly controlling the use of place names as trademarks. Specifically, where
trademarks are identical or similar to or contain previously registered geographical
indications, registration is refused; registration of trademarks containing geographical
indications of goods is also refused. Under these regulations, the use of geographical
indications to register as exclusive trademarks is limited and almost impossible for
Vietnamese geographical indications.
From the viewpoint of harmonizing interests among countries, the principle of "first
to file" also applies to the protection of trademarks and geographical indications. The
acceptance of geographical indication registration in the form of collective trademarks
or certification trademarks is consistent with practices of the United States, Australia
and New Zealand. On the other hand, the coexistence of trademarks registered
previously in good faith and geographical indications later registered meets the
requirements of European Union countries.
Vietnamese regulations are quite general and comprehensive about the resolution of
conflicts between trademarks and geographical indications. However, solving this
issue is actually not easy. Currently, Vietnam has not yet found solutions for a specific
case where both the United States and the Czech Republic have applied to register the
name "Budweiser" for beer products in two different forms (as a trademark and as a
geographical indication).
Different viewpoints on the relationship between the protection of geographical
indications and trademarks in member countries are still the topic discussed in the
negotiations within the WTO framework on building an international communication
and registration system for geographical indications protection. The negotiations have
not come to an end so far.

18

ANNEXE 1
Dispute resolution of trademark and geographical protection
under Vietnamese law.
Sign containing geographical
origin
Existing protected
geographical origin

No protected geographical origin

Has the sign acquired distinctiveness

through use (generally used and
recognised sign)
YES (IPL, art 74.2.e)

Certification
trademark

Trademark

Can the use of such signs mislead

consumers on the geographical origin of
products?
NO

Collective
trademark

YES (LPI, art

74.2.l,m)

REFUSAL

No

Decision on a
case by case
basis

Registered trademark
Later application for protection of
geographical indication

Can the use of a geographical

indication lead to a confusion over the
place of origin of the product?
NO

YES (IPL, art 80.3)

ui

COEXISTENCE

19